Elyria, OH asked in Copyright and Patents (Intellectual Property) for Ohio

Q: Copyright infringement and Patents

If I design a device similar to Patent number: 9033760 but not a direct copy and is a DIY project. Where the purchaser receives 3d files to 3d print the pieces and assemble the system themselves.

1 Lawyer Answer
Kevin E. Flynn
Kevin E. Flynn
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Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: Let's assume that what you send in your files allows users to use 3D printers to create all the pieces needed to make what is in claim 1 of the cited patent.

1. An interchangeable, modular display system for miniature models used in wargaming, comprising:

a display panel having a plurality of struts along at least one edge;

at least one handle having a plurality of grooves interlocked with the plurality of struts and supporting the display panel in a lateral position to support one or more miniature models used in wargaming, the display panel having one or more magnets;

a miniature model that adheres to the one or more magnets of the display panel; and

wherein the display panel may be interchanged with the at least one handle without disrupting the alignment or position of one or more miniature models supported on the panel.

Technically, you would not be directly infringing claim 1. (unless you made one for your own use)

Direct infringement of a patent claim is covered by 35 USC Section 217(a)

(a)Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

The claim would not be infringed until the pieces were printed and maybe not until the required magnets were added. We don't need to worry about how much assembly would be required before the parts become an infringing modular display system for models as I presume the intent is to make a working modular display system.

Someone at the tail end of the process would be a direct infringers (if they are in the US).

However, patent law is nuanced. So while you would not be a direct infringer, you could be found liable for 35 USC 271(b).

(b)Whoever actively induces infringement of a patent shall be liable as an infringer.

I say "could" as solid advice on this issue should come from a patent attorney that has looked at exactly what your files allow people to print and compares that to the totality of what is necessary to create an infringing device. There may be a need to review case law on the cases that have dealt with inducing infringement including cases that looked at providing files for 3D printers. To be conservative, I want to raise the issue that this fact pattern could lead to liability so that you and anyone that reads this thread is warned of the risk.

Your files and presumably some instructions provided with the files could be seen as inducing infringement. So unless you took care to ensure that the files were only sent to people outside of the US, you might be sued for inducing infringement within the US.

There is another related theory of liability called contributory infringement but we can focus on inducement.

It would make sense for the patent owner to sue you rather than sue the individual infringers are you are the source of the files that are allowing infringing devices to be made.

The damages that could be obtained may dwarf the money that you received for the files.

I hope that this helps.

NOTE -- I have no opinion on whether this patent should have been issued or can be invalidated. I have not commented on any other legal claims that might be raised against you as this was posted as a patent question.

Kevin E Flynn

1 user found this answer helpful

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